Patent Requirements

Executive summary:

Section 101 of the U.S. Patent Act sets forth the general requirements for a utility patent:

Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvements thereof, may obtain a patent, subject to the conditions and requirements of this title.

In other words, for an invention to be patentable it must:

  1. be statutory,
  2. be new,
  3. be useful, and
  4. be nonobvious.

Statutory Requirement:

The U.S. Patent Statute states that processes, machines, articles of manufacture, and compositions of matter are patentable. This wording appears to cover every useful invention imaginable. To a large extent, this is true. Under this statute, the United States has one of the broadest standards for what is patentable in the entire world. Most inventors, including most of those in the software and computer fields, do not have to worry whether their inventions are non-statutory. However, there are certain "inventions" which are not patentable under the Patent Act. Examples relevant to the computer and Internet field can be seen from the recent rules issued by the U.S.P.T.O. in connection with software patents (dated October 2005). In these rules, the Office stated that the following items were "clearly non-statutory":

These items are considered indistinguishable from abstract ideas and laws of nature, and therefore are unpatentable.

Within the 2005 guidelines is a flowchart that Examiners should use when evaluating inventions for subject matter eligibility. These guidelines can be seen separately here.

Novelty (Newness) Requirement:

In order for an invention to be patentable, it must be new as defined in the patent law. This novelty requirement states that an invention cannot be patented if certain public disclosures of the invention have been made. The statute which explains when a public disclosure has been made (35 U.S.C. Section 102) is complicated and often requires a detailed analysis of the facts and the law. The most important rule, however, is that an invention will not normally be patentable if:

One of the most important lessons to learn from this requirement is that there is a one year period after the first public disclosure or offer for sale of an invention during which a patent application must be filed. This "statutory bar" is unforgiving, which means that an inventor who does not file for patent protection on her new invention within this one year grace period will lose all right to obtain patent protection on the invention. In fact, it may be that by simply explaining your invention to friends and co-workers without any obligation of confidentiality, you may have started the "ticking" of this one-year clock.

Although the United States grants the one year grace period described in the last two rules above, most other countries do not grant such a period. Therefore, it is almost always preferable to file a patent application before any public disclosure of the invention. Most patent attorneys will try diligently to file a patent application prior to any public release or announcement in order to allow international patent filings.

Useful Requirement:

The patent law specifies that the subject matter must be "useful." The term "useful" in this connection refers to the condition that the subject matter has a useful purpose and also includes operativeness; that is, a machine which will not operate to perform the intended purpose would not be called useful, and therefore would not be granted a patent. In most cases, the usefulness requirement is easily met in computer and electronic technologies.

Nonobviousness Requirement:

If an invention is not exactly the same as prior products or processes (which are referred to as the "prior art"), then it is considered novel. However, in order for an invention to be patentable, it must not only be novel, but it must also be a nonobvious improvement over the prior art. This determination is made by deciding whether the invention sought to be patented would have been obvious "to one of ordinary skill in the art." In other words, the invention is compared to the prior art and a determination is made whether the differences in the new invention would have been obvious to a person having ordinary skill in the type of technology used in the invention.

As can be imagined, the determination of whether a particular change or improvement is "obvious" is one of the most difficult determinations in patent law. In order to make such a determination, an examiner in the patent office will normally review previous patents to find those patents which are closest to the invention in which a patent is sought. If all the features of the invention can be found in a single patent, the examiner will reject the patent as lacking novelty (that is, it is exactly the same as what was previously known and therefore is not new). If no patent contains all of the features, the examiner will attempt to combine two or more prior patents, and attempt to find all of the features in a combination of those prior patents. If the examiner is successful in finding such a combination, the examiner will generally reject the invention as an obvious combination of items known in the prior art. However, there must be some reason to combine the two references, and often a rejection based on such a combination can be overcome.

Some changes to known products which would not normally be patentable are: